Siemens Aktiengesellschaft vs Siemens Consultancy Services Pvt Ltd

,

Manmohan, J",

Present suit has been filed for permanent injunction restraining infringement of trademark, misuse of the trademark SIEMENS as a trading name,",

rendition of accounts etc. against the defendant. The prayer clause in the suit is reproduced hereinbelow:-,

“(a) a decree for permanent injunction restraining the defendant, by themselves, their servants, agents, etc. from manufacturing, selling",

offering for sale, advertising, directly or indirectly dealing in products or goods and offering services under the trademark SIEMENS or",

any other trademark deceptively and/or confusingly similar to the trademark SIEMENS of the Plaintiffs, so as to infringe plaintiff’s",

registered trademark Siemens And/Or,

(b) a decree for permanent injunction restraining the defendant, by themselves, their servants, agents, etc. from manufacturing, selling,",

offering for sale, advertising, directly or indirectly dealing in products or goods and offering services under the trading name/corporate",

name SIEMENS or any other trademark and trading name deceptively and/or confusingly similar to the trademark SIEMENS of the,

plaintiffs, so as to infringe plaintiff’s registered Trademark Siemens And/Or.",

(c) a decree for permanent injunction restraining the defendant, by themselves, their servants, agents, etc. from using website",

www.siemensconsultancy.com and domain name www.siemensconsultancy.com and/or any other website and domain name having name,

Siemens, so as to infringe plaintiff’s registered trademark Siemens And/Or.",

(d) A decree of damages of Rs.20,00,500/- on account of Infringement by the use of the trademark enumerated herein of the Plaintiff in",

favour of the Plaintiff and against the Defendant, And/Or",

(e) A decree for delivery up of all the infringing goods as complained of herein and all blocks, dies and all such articles employed by",

Defendant in applying the trademark SIEMENS to the offending goods to an authorized representative of the plaintiffs for,

destruction/erasure. And/Or.,

(f) Award costs of the proceeding in favour of the Plaintiff and against the Defendants; And/Or,

(g) Grant such other or further reliefs as this Hon’ble Court may deem fit and proper in the facts and circumstances and in the interests,

of justice.â€​,

At the outset, learned counsel for the plaintiffs gives up prayers (d) and (e) of the prayer clause to the suit. The statement made by learned counsel",

for plaintiffs is accepted by this Court and plaintiffs’ are held bound by the same.,

Vide order dated 09th October, 2015 this Court granted an ex-parte ad interim injunction in favour of the plaintiffs and against the defendant, which",

was modified and confirmed vide order dated 27th,

Since the defendant did not appear despite service, it was proceeded ex-parte vide order dated 27th April, 2017.",

In the plaint, it has been averred that the plaintiff no.1, is one of the leading electrical, electronic and industrial engineering company with about 750",

subsidiaries and associated companies around the globe and that the plaintiff no.2 being the subsidiary of the plaintiff no.1 has the permission to use,

the impugned trademark SIEMENS in India.,

It is stated in the plaint that the trademark SIEMENS was first adopted by plaintiff no.1 in the year 1847 in Germany by the predecessors-in-title of,

the plaintiff no.1 and has been continuously used since then by its successors-in-title. The word SIEMENS also constitutes an important feature of the,

trading name of the plaintiffs.,

It is stated in the plaint that the plaintiff no.1 is the registered proprietor of the trademark SIEMENS in India under various classes, including under",

classes 1, 5, 7, 9, 10 and 11 of the Trade Marks Act, 1999 and the aforesaid registrations are valid and subsisting.",

It is averred in the plaint, that the approximate worldwide sales figure of the goods of the plaintiff no.1 bearing the trademark SIEMENS for the",

year 2014 was seventy two (72) billion euros and the sales figure of the plaintiff no.1’s goods and services for the same period in India was,

1,27,081 million rupees. It is also stated that the plaintiff no.2 has spent 115 million rupees on advertising and marketing the trademark SIEMENS in",

India.,

It is stated in the plaint that the plaintiffs have also registered the domain names www.siemens.com and www.siemens.co.in, since 1986 and 2009",

respectively. It is stated that the plaintiffs advertise and promote their products under the registered trademark SIEMENS on their websites and a,

large number of prospective customers visit the aforementioned websites of the plaintiffs.,

It is further stated that the plaintiffs have gained tremendous goodwill and reputation in the trade and the purchasing public / customers associate,

the trademark SIEMENS with the products of the plaintiffs alone.,

Learned counsel for the plaintiffs states that in the month of September, 2015, it came to the plaintiffs’ knowledge that the defendant was",

using the website www.siemensconsultancy.com. She states that the defendant is infringing the plaintiffs’ trademark SIEMENS by using the,

trademark and trade name SIEMENS in relation to identical services.,

She states that defendant by adopting the mark SIEMENS qua its goods/services; and for its domain name www.siemensconsultancy.com, has",

sought to mislead, deceive and confuse the relevant purchasing public and advertisers into believing that there is an association and/or nexus between",

the plaintiffs and the defendant. She states that the defendant is attempting to trade upon the reputation and goodwill associated with the trademark,

SIEMENS of the plaintiffs and unjustly enrich itself. She states that the defendant’s use of the domain name www.siemensconsultancy.com also,

dilutes the distinctive quality of the impugned mark of the plaintiffs and the use of the trade name Siemens Consultancy Private Limited results in,

tarnishing the plaintiffs’ reputation and monetary loss.,

Learned counsel for the plaintiffs lastly states that at present the website of the defendant stands closed and the domain name has also not been,

renewed.,

i) Exhibit PW2/1 (Collectively),"Printout of website www.siemens.com owned by Plaintiff no.1. (Page

no.309- 315 filed along with list of document along with plaint).

ii) Exhibit PW2/2 (Collectively),"Printout of website www.siemens.co.in owned by Plaintiff no.2.

(Page no.316- 559 filed along with list of documents along with plaint).

iii) Exhibit PW2/3,"Printout of whois record showing details of domain name

www.seimensconsultancy.com. (Page no.290-291 filed along with list

of document along with plaint).

iv) Exhibit PW2/4 (Collectively),"Printout of website of defendant www.seimensconsultancy.com

(Page no.292-305 filed along with list of document along with plaint).

v) Exhibit PW2/5 (Collectively),"Printout of links/URL advertised jobs under the name Siemens

consultancy Private Ltd. http://www.naukri.com/ recruiters/abhinav-

2286106. (Page no.306-308 filed along with list of document along

with plaint).

vi) Exhibit PW2/6 (Collectively),"Print out of judgment in CS(OS) 1986/2013 titled as Siemen

Aktiengesellschaft and one another vs. Siemens Solutions as well as

order dated 08.12.2014 in CS(OS) No.3785/2014 titled as Siemens

Aktiengesellschaft and one another vs. Siemens Project India Pvt

Ltd. downloaded from the website of Delhi High Court.